Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC v Kannan Murali / Digital Intelligence LLC
Claim Number: FA1812001819680
Complainants are Citadel Enterprise Americas LLC and its related entity KCG IP Holdings LLC ("Complainants"), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Kannan Murali / Digital Intelligence LLC ("Respondent"), Oman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citadel-investment.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainants submitted a Complaint to the Forum electronically on December 5, 2018; the Forum received payment on December 6, 2018.
On December 6, 2018, GoDaddy.com, LLC confirmed by email to the Forum that the <citadel-investment.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@citadel-investment.com. Also on December 6, 2018, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 24, 2018.
On December 30, 2018, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainant
Complainant Citadel Enterprise Americas LLC is a large investment institution founded in 1990 and employing more than 1,250 professionals in offices worldwide. The CITADEL mark is used in connection with this business under license from Complainant KCG IP Holdings LLC, which owns various U.S. registrations for the mark.
Respondent registered the disputed domain name <citadel-investment.com> in August 2018. The domain name resolves to a "site not available" notice. Based upon the inclusion of the word "investment" in the domain name, Complainants presume that Respondent is preparing to use the domain name to compete with Complainants in the financial services space. Complainants state that they have not given Respondent any license, permission, or authorization to use the CITADEL mark, and assert that Respondent has never been known by the disputed domain name. Complainants allege that Respondent's passive holding of the disputed domain name demonstrates bad faith, given the strong reputation and substantial worldwide use of Complainant's CITADEL mark and the absence of any evidence of good faith use of the domain name.
Complainants contend on the above grounds that the disputed domain name <citadel-investment.com> is confusingly similar to their CITADEL mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent states that the disputed domain name was registered on behalf of a client, Citadel Investment LLC, which was founded in 2004 and holds a commercial license issued in that name by the Ministry of Commerce and Industry in Oman. Respondent states that it was engaged by this client in August 2018 to develop a website, and therefore denies having registered the domain name in bad faith. However, Respondent states that it and its client do not object to transferring the disputed domain name in exchange for the $72.85 fee that it paid to register the domain name for a 5-year period.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainants have rights. The Panel further finds that Complainant has not proved that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainants must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint." The Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint." The Panel considers the nexus between Complainants here sufficient to permit them to proceed jointly under the Policy.
The disputed domain name <citadel-investment.com> incorporates Complainants' registered CITADEL trademark, adding a hyphen, the generic term "investment," and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainants' mark. See, e.g., Citadel Investment Group, L.L.C. v. Eli Rosenberg & Etro Holdings, LLC., FA 1230838 (Forum Dec. 2, 2008) (finding <citadelinvestments.com> confusingly similar to CITADEL); Citadel LLC and its related entity KCG IP Holdings LLC v. Simo Nikolov Simeonov, FA 1683253 (Forum Aug. 22, 2016) (finding <citadel-capital.com> confusingly similar to CITADEL). Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainants have rights.
In light of the Panel’s dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.
Finally, Complainants must show that the disputed domain name was registered and is being used in bad faith. Complainants contend that Respondent's passive holding of the disputed domain name is indicative of bad faith, given the strength of Complainants' CITADEL mark and the absence of any evidence of good faith use of the domain name.
As the WIPO Overview notes, a finding of bad faith may be appropriate even where a respondent has not made active use of a domain name.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 3.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
Complainants and their mark appear to be well known internationally, although Complainants have not offered any evidence of a presence or reputation in Oman, where Respondent and its client are located. Respondent has explained and substantiated its reason for registering the disputed domain name. Respondent's client Citadel Investment LLC was founded in 2004 and holds a commercial license issued in that name by the Ministry of Commerce and Industry in Oman. And while it is not entirely clear that Respondent's client will be able to make a good faith use of the domain name, the Panel is hesitant to characterize this as implausible. Finally, the Panel notes that Respondent does not appear to have been involved in any prior proceedings under the Policy, and the disputed domain name was registered within the past few months. While there is no specific minimum time period required to support an inference of bad faith based upon passive holding, a longer period of inactivity would provide stronger support for such an inference.
Respondent's offer to transfer the domain name in exchange for its actual costs appears to be bona fide. Even disregarding that offer, however, the Panel does not consider it likely based upon the available evidence that Respondent registered or is using the disputed domain name in bad faith.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <citadel-investment.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: December 31, 2018
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